All Things Pros focuses exclusively on patent prosecution. Board of Appeals decisions are used to illustrate good – and bad – strategies for handling 102, 103, 101 and 112 rejections. Claim construction is a major focus, because prosecution is usually about the Broadest Reasonable Interpretation of a claim. Coverage also occasionally includes procedural topics such as after-final, RCE, and restriction practice, and infringement topics from district court or Federal Circuit decisions.

Wednesday, October 17, 2012

BPAI finds "configured to be housed within or detached from the bay" requires both configurations, despite use "or"

Takeaway: In an application directed to a replacement battery pack for an electronic device, the issue on appeal was the phrase "a replacement battery pack configured to be housed within or detached from the battery pack receiving bay" (emphasis added.) The Examiner took the position that since the claim used the word "or" in describing the battery pack configuration, only one of the configurations was required to be found in the prior art. The Applicant argued that the proper interpretation of the claim required both configurations. In particular, the Applicant argued that the phrase "detached from" implied that the battery pack was previously "housed within," and thus the claim required both configurations. The Board found the Examiner's claim interpretation to be unreasonably broad in view of Applicant's specification, which made it clear that "the claim term “or” [was used] to mean that the replacement
battery pack is configured to provide some functionality, both when the
battery pack is disposed in the bay as well as when it is detached from
the bay." (Ex parte Godovich, BPAI 2010.) Details:

The application on appeal disclosed a replacement battery pack for an electronic device (below).

A representative claim on appeal read:

10. A portable electronic device comprising:
a main body;
a battery pack for supplying power to the portable electronic device;
a battery pack receiving bay (120) formed in the main body for removably-housing the battery pack,
the battery pack receiving bay (120) having a connector electrically connectable to the battery pack; and a replacement battery pack (200) configured to be housed within or detached from the battery pack receiving bay,
the replacement battery pack comprising
a power storage section having a secondary battery,
a power input section having at least one power connector for receiving electric power for charging the secondary battery, and
a power output section having an output terminal for receiving electric power from the power input section and for electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay to power the portable electronic device.
(Emphasis and reference numbers added.)

Claim 10 was rejected as obvious over Applicant's Admitted Prior Art and a patent reference, Shoji. The rejection relied on AAPA for teaching the main body, battery pack and receiving bay, and on Shoji for teaching the claimed replacement battery pack. The rationale supplied for combining the references was substitution of AAPA's battery with Shoji's battery "in order to use the battery for a variety of applications with high power capacity."

With respect to the "configured to" clause of the replacement battery pack, the Final Office Action alleged that "Shoji discloses a replacement battery pack (A) configured to be housed within or detached from the battery pack receiving bay (mounted or inserted in Second bay)." In a Response to Final, the Applicant argued that the Shoji's auxiliary battery A was not configured as recited in the claim. The Applicant explained that, rather than being "configured to be housed within or detached from the bay," "[Shoji's] auxiliary battery A is an external battery which is connected to the electronic device externally via a connection cable between the power output section 3 and the electronic device." The Applicant also argued the "output terminal" element of the replacement battery pack.

The Advisory Action noted only that "the teaching and elements are both shown in the prior office communication, and the arguments presented by the applicant are not persuasive." The Applicant filed a Pre-Apeal Brief Request, then an Appeal Brief, each of which repeated the same arguments for claim 10.

The Examiner provided new information in the Examiner's Answer. Specifically, the Answer explained (for the first time) that "the claim recites, '– housed within or detached from –' so examiner is required to show one of the two not both" (emphasis added). The Answer then explained that Shoji disclosed one of the limitations – "detached from the [bay]" – by disclosing a power supply cable between the auxiliary battery and the electronic device, such that the "auxiliary battery is detached from the battery pack-receiving bay when the power supply cable is disconnected."

The Applicant filed a Reply Brief to challenge the Examiner's claim interpretation:

[A]ppellant respectfully disagrees with the Examiner's interpretation of the alternative expression in lines 9-10 of claim 10. The second part of the alternative expression in claim 10 explicitly recites that the replacement battery pack is configured to be "detached from the battery pack receiving bay." The term "detached" in claim 10 relates to the replacement battery back being "removed" or "taken out of" the battery pack receiving bay. This is the context in which the term"detached" should be read because the recitation "detached from the battery pack receiving bay" is prefaced by "housed within or", which corresponds to the part of the alternative expression in which the replacement battery pack is housed within (i.e., inserted into) the battery pack receiving bay. Stated otherwise, the expression "detached from the battery pack receiving bay" in claim 10 corresponds to the part of the alternative expression in which the replacement battery pack is removed or taken out from the battery pack receiving bay from the configuration in which the replacement battery pack is "housed within" the battery pack receiving bay, as recited in claim 10.
(Emphasis added.)

The Board agreed with the Applicant, finding the Examiner's interpretation to be unreasonable in view of the specification:

The Examiner does not find that the cited art teaches both configurations. Rather, the Examiner takes the position that because these noted claims employ the word “or,” the cited prior art only needs to disclose a replacement battery pack that possess one of the recited configurations – not both.
We find the Examiner’s interpretation to be unreasonably broad. Read in light of the Specification, it is more than reasonably clear that Appellant used the claim term “or” to mean that the replacement battery pack is configured to provide some functionality, both when the battery pack is disposed in the bay as well as when it is detached from the bay.

Based on this unreasonable claim construction, the Board reversed the obviousness rejection of claim 10.

My two cents: The board got this one right. Sometimes OR means AND. That is, while OR can be used to signal a list of alternatives, sometimes OR requires the presence of all the alternatives. In my mind, that's usually the case with "configured to X, Y, or Z." That was definitely the case here. Here's the only description in the spec relating to detaching the battery pack from the receiving bay.

[0051] The structure and function of the connector 116 of the replacement battery pack 100 are the same as for a conventional battery pack used for portable computers. When the replacement battery pack 100 is housed in the battery pack receiving bay 120 of the portable computer 105, the connector 116 is electrically connected to a connector provided in the battery pack receiving bay 120 to form appropriate electrical connection and functions as an output terminal for providing power to the portable computer 105. When the replacement battery pack 100 is detached from the battery pack receiving bay 120 of the portable computer 105, the connector 116 of the replacement battery pack 100 can be electrically connected to corresponding connectors of a charging station and functions as an input terminal for charging the replacement battery pack in a conventionally known manner.

The spec clearly describes two configurations and in no way suggests that either is optional.

The Board focused on the narrow issue of interpreting "configured to X or Y". The Board reversed because the claim required both X and Y and the Examiner found only Y ("detached from").

However, the claim language went further that that, since it also included this specific recitation:

the replacement battery pack comprising ... a power output section having an output terminal for ... electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay

The Applicant should have argued this particular point, since the Examiner did not allege that Shoji taught a replacement pack housed in the bay.

I note that the claim uses "for" ("an output terminal ... for electrical connection"). Some Examiners like to ignore any phrase following "for" as intended use. Some Examiners treat "when" the same way. It's best to find this out early in prosecution so you can either amend so that the Examiner gives the phrases patentable weight, or persuasively argue why the language is not intended use.

Finally, though I do think the Board was right to reverse, the Applicant might have been better off amending during prosecution so that the claims used AND rather than OR. Seems like the claim could easily have been structured to recite something like "a first configuration AND a second configuration."

15 comments:

I pretty much agree on this one. This was a claim construction issue and I see the point argued by Appellants. This also highlights one of the inherent problems with patents -- the English language can be imprecise.

However, I'm glad they stuck to their guns regarding the claim language. Some patent practitioners are all too willing to amend claims. However, there are at least two downsides to that: (i) you've Festo'd away DOE and (ii) you've given the Examiner an excuse to make the next Office Action final. Granted, there are instances in which it is better to fix the claim language than to risk having the language being misconstrued at the PTAB (should they appeal). However, these factors should be considered before amending.

The claims were construed to include both because it was explictly provided for in the specification as requiring both, however, is the general rule that when using "or" anticipation requires one or the other?

I haven't read the spec., but an "explicit requirement" would be rare. After all, the applicant might want to allege infringement at some point. Where does the spec. "explicitly" provide for "requiring" both?

If the Board is going to take the position that "or" isn't to be construed according to its normal use in english and contrary to the normal cannons of claim construction, then they should have entered new grounds of rejection under 112, 2nd.

They didn't enter a new grounds under 112, 2nd because the claim, when read in light of the specification, and by one of ordinary skill in the art, and not an examinertard looking to make a rejection, was not indefinite.

Maybe you should actually review the case law on the "normal cannons of claim construction" and educate yourself a little before posting silly comments that confirm what most of us already know: examiners don't know squat about claim construction.

That's the correct interpretation. The other interpretation that could be applied would be worded differently. You would say configured to 1 or configured to 2. Not configured to 1 or 2. Because we're talking about one monolithic configuration.

In Miyazaki, a claim element was amenable to two possible definitions, neither of which made sense in view of the rest of the claims. On the other hand, requiring one or the other, or both, is definite in that the claim is met by any of three different combinations.

Today's Flo Healthcare CAFC opinions say there are two (or three) different lines of cases to follow with respect to claim interpretation at the PTO. However, even in infringement and validity proceedings, the CAFC is fond of pointing out that it's not proper to read disclosed embodiments into the claim (except when they do it).

In view of the spirited discussion of "configured to" language on one of the Forums you visit, Karen, it's very interesting that neither the Examiner nor the Board made an issue of the "configured to" clause as having no patentable weight, only to the "or". But this claim uses a whole mix of "configured to" "for" and "-able" constructions and got away with it. Interesting.

"it's very interesting that neither the Examiner nor the Board made an issue of the 'configured to' clause as having no patentable weight."Why should they? The Federal Circuit has stated time and time again that you cannot ignore claim limitations.

Examiners ignore or incorrectly apply case law all the time. I have one Examiner now who incorrectly cites in re Hutchinson to reject "configured to" clauses as having no patentable weight. When I argued why that case was not applicable and cited case law that was on point, he simply cited in re Hutchinson again and issued a final rejection.

About Me

I'm a registered patent attorney, and a partner at the law firm of Cantor Colburn LLP. My practice focuses on patent prosecution, primarily in the technology areas of networking, data communications, operating systems, and application software.

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